The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Grenius Rechtsanwälte, Germany.
The Respondent is Swiss Recruitment of Bridgend, United Kingdom of Great Britain and Northern Ireland (“UK”). 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2013. On March 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2013.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on May 13, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a German automotive manufacturing company headquartered in Wolfsburg, Germany. The Complainant designs, engineers, manufactures and distributes passenger cars, commercial vehicles, motorcycles, engines and turbo machinery, and offers related services including financing, leasing and fleet management.
The Complainant is the owner of several national, European and international trademarks in many parts of the world. The Complainant submitted evidence that it holds trademark rights on both signs “VW” and “Crafter”.
Furthermore, through its brands, the Complainant has gained substantial recognition and reputation internationally. This recognition and reputation is well documented by the Complainant, based on facts and figures.
The Respondent registered the disputed domain name on September 2, 2006. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is and has been for many years the right holder of the marks VW and VOLKSWAGEN in numerous countries worldwide. The Complainant argues that its trademark VW is distinctive and that the vehicles it sells worldwide carry the “VW” brand in the front and back.
On the basis of previous UDRP decisions, the Complainant contends that the “Volkswagen” brand, also known under “VW”, is famous and benefits from an extremely strong reputation.
The Complainant also establishes that it is and has been for many years the right holder of the mark CRAFTER in various countries worldwide. The mark is used for its series of versatile light commercial vehicles.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks VW and CRAFTER, as it is composed of the two signs. The Complainant further contends that both trademarks put together shall be considered as a single trademark. Therefore, that the disputed domain name is identical to the trademark registrations of the Complainant as it fully incorporates them.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
(b)(i) Burden of proof
On the basis of previous UDRP decisions, the Complainant contends that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a domain name, the burden of proof shifts to the respondent to rebut the complainant’s contentions.
(b)(ii) No bona fide offering of goods or services
Based on the evidence submitted to the Panel, the Complainant establishes that (i) the Respondent has registered the disputed domain about seven years ago and does not operate a business or offers any own goods or own services on the website under the disputed domain name; and that (ii) the Respondent prominently provides advertisements as sponsored links on the website and tries to sell the disputed domain name.
The Complainant contends that the Respondent just wants to ride on the good reputation of the Complainant and its registered marks and has used the disputed domain name only in order to (i) receive a share of revenues derived from advertisements or to sell the disputed domain name to the Complainant; and (ii) misdirect Internet users familiar with the VW trademark for commercial gain.
(b)(iii) “Commonly known by”
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that the Respondent (i) is not commonly known under the name “VW” or “Crafter” or “vw-crafter”; (ii) has no own rights in “VW”, “Crafter” or “vwcrafter”; and (iii) has no license or permission from the Complainant to use its name and trademarks VW or CRAFTER or to apply for or use any domain name incorporating such marks.
(b)(iv) A noncommercial or fair use of the Respondent is not cognizable
The Complainant contends that given the extremely strong reputation and widely known trademark VW and its combination with the trademark CRAFTER and the content of the website at the disputed domain name, it indicates that the Respondent had full knowledge of the trademarks and that its only intention is to gain profit by riding on the good reputation of the Complainant. It results from such contention that the disputed domain name is not used fairly, is confusing and diverting, and is tarnishing the trademarks and goodwill of the Complainant.
Furthermore, the Complainant argues that there is no noncommercial or fair use of the disputed domain name by the Respondent making it cognizable given that it does not actively use the disputed domain name for own content, places advertisement links which are positioned for commercial interest, and tries to sell the disputed domain name to the Complainant.
(c) The disputed domain name was registered and is being used in bad faith
(c)(i) Offer to sell / rent or license
The Complainant argues that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. The Complainant further contends that the Respondent did not register the disputed domain name for own use, but merely for displaying advertisements as sponsored links.
(c)(ii) Disrupt competitor
The Complainant contends, given the reputation of the Complainant’s trademarks, that the Respondent (i) attempts to profit by the deliberate diversion of Internet users which want to acquire automobile-models of the Complainant and (ii) seeks to disrupt the business of the Complainant by directing consumers to the Complainant´s competitors.
(c)(iii) Attract Internet users
The Complainant argues, on the basis of paragraph 4(b)(iv) of the Policy, that the use of the disputed domain name with the intent to attract Internet users to the website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks shall constitute evidence of registration and use in bad faith.
The Complainant further argues that given the existence of the famous trademark VW of the Complainant, which could not be ignored by the Respondent, the use of the disputed domain name by the Respondent was to benefit from the diversion of Internet users. Furthermore, the display of advertisements as sponsored links, constitutes an attempt to misdirecting users familiar with the VW trademark to the Complainant’s competitors, for commercial gain.
(c)(iv) Other indications of bad faith
The Complainant further establishes bad faith on the basis of (i) its famous trademark VW which could not have been ignored by the Respondent, (ii) the false contact information of the Respondent, and (iii) the passive holding of the website which only includes sponsored links and a link to offer the disputed domain name for sale. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Notwithstanding a respondent’s default, the complainant must nevertheless still establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”), paragraph 2.1 and paragraph 4.6, and the relevant decisions cited therein. Nonetheless, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and, in the absence of exceptional circumstances, draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
This Panel has found no such exceptional circumstances that would justify the Respondent’s failure to submit a Response. The Panel therefore infers that by not replying to the Complainant’s contentions, the Respondent does not deny the facts asserted and contentions made by the Complainant (e.g. Roche Products Limited v. Private Whois Service,WIPO Case No. D2010-1983; Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation,WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact,WIPO Case No. D2003-0994).
As a result, asserted facts that are not unreasonable will be taken as true by this Panel.
Furthermore, in accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, this Panel will examine whether each the following three elements are present:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Consequently, this Panel shall further analyze the eventual concurrence of these three grounds in the present case. A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it had registered trademark rights to VW and CRAFTER well before the disputed domain name was registered. Also, the Complainant has sufficiently demonstrated that it has a lengthy use of both signs for its commercial activities.
For the sake of completeness, this Panel further analyzed the Complainant’s contention with regard to the notoriety of the VW Trademark. This Panel believes that in order to determine whether the trademark should be considered as being well known, various factual elements shall be taken into account, including the degree of knowledge and recognition of the mark in the relevant sector; the duration, extent and geographical area of any use and promotion of the mark; and the enforcement efforts and success of rights in the mark. This Panel finds that the trademark VW shall be considered, at least for the purposes of this administrative procedure, as a well-known trademark and has had a good and renowned reputation in the automotive sector worldwide for many years. Such conclusion is supported by previous UDRP decisions (Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; Volkswagen AG v. Milas Auto,WIPO Case No. DTV2006-0003; Volkswagen AG v. NovaNIC,WIPO Case No. D2005-0142; Volkswagen AG v. Digi Real Estate Foundation,WIPO Case No. D2005-0952)
Secondly, this Panel finds on the basis of previous UDRP decisions that it is established that where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525).
Thirdly, this Panel also notes that it has already been considered by the panel in Bayerische Motoren Werke AG v. Null,WIPO Case No. D2002-0937, that the combination of two marks in the same expression should deserve entirely the same type of protection that is envisaged for a single mark.
Fourthly, it shall be found that the addition of a dash does nothing to distinguish the disputed domain name from the mark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP decisions (see OLX Inc., OLX S.A. v. Privacy Protect / Generic Domains,WIPO Case No. D2012-1433; Guinness UDV North America, Inc. v. UKJENT,WIPO Case No. D2001-0684).
Fifthly, this Panel finds, similarly to other UDRP panels, that the addition of the generic top-level domain (gTLD) “.com” to the disputed domain name does not constitute an element so as to avoid confusing similarity for trademark purposes (see Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
This Panel finds in the present case that the disputed domain name incorporates the Complainant’s well-known trademark VW as well as its trademark CRAFTER in their entirety and only with a dash introduced between the two components, and ending with the suffix “.com”.
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s VW and CRAFTER trademarks, envisaged together. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
This Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademarks has been granted to the Respondent. Thus, the Respondent has no own rights on “VW” and/or “Crafter”, or on the combination of such elements.
Moreover, there is no evidence before the Panel to show that the Respondent was acting in pursuance of any legitimate interests with respect to registering the disputed domain name. Indeed, the Respondent is not commonly known by the name “VW” and/or “Crafter”, or the combination of such elements.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
This Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. In fact, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name, and believes after reviewing the website as evidenced by the Complainant, that the Respondent had full knowledge of the trademarks and that its only intention is to gain profit by riding on the good reputation of the Complainant. Furthermore, this Panel finds that the Respondent does not actively use the disputed domain name for its own content but places advertisement sponsored links which are positioned for commercial interest, and that it tries to sell the disputed domain name for an excessive price.
For all the foregoing reasons, this Panel finds the Respondent’s use of the disputed domain name cannot be considered to be in accordance with a bona fide offering of goods or services. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.
When assessing the bad faith, the following two elements should be considered (1) whether the Respondent knew of the Complainant and its trademark when it registered the disputed domain name, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (Swarovski Aktiengesellschaft v. blue crystal,WIPO Case No. D2012-0630; Avon Products, Inc. v. Mary Ultes,WIPO Case No. D2009-0471).
First of all, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name. In this respect, this Panel believes, after reviewing the website and its links as evidenced by the Complainant, that the Respondent must have known and be aware of the rights on the prior trademarks VW and CRAFTER and the associated products at the time of the registration of the disputed domain name.
Furthermore, this Panel believes that the Respondent’s registration of the disputed domain name appears to be primarily for the purpose of selling the disputed domain name. Such intention constitutes bad faith on the part of the Respondent.
This Panel also believes that the Respondent’s actual use of the disputed domain name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behavior is indicative of bad faith on the part of the Respondent.
This Panel also finds, on the basis of the Complainant’s evidence, that the disputed domain name resolves in misdirecting consumers looking for the Complainant’s website in order to divert traffic to the Complainant's competitors. The Complainant sufficiently shows the disputed domain name has been registered and used with the intent to attract Internet users to the website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark, which constitutes evidence of registration and use in bad faith.
As a result, this Panel infers from such behaviour that the Respondent’s purpose in registering the disputed domain name appears to have been to capitalize on the reputation and goodwill of the Complainant’s trademarks, and thus generate unjustified revenues.
Finally, there are several other indications of bad faith on the part of the Respondent as asserted and evidenced by the Complainant, including the false contact information of the Respondent, the absence of response from the Respondent, or the passive holding of the disputed domain name.
In light of the foregoing, this Panel finds that the disputed domain name was registered and used by the Respondent in bad faith under the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Benoit Van Asbroeck
Sole Panelist
Date: May 27, 2013
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